Schering Aktiengesellschaft v the Upjohn Company

The Registrar of Trade Marks considered an opposition by The Upjohn Company to the registration of the trade mark NUVELLE, filed by Schering Aktiengesellschaft for pharmaceutical products for the treatment of climacteric diseases. The opposition was based on the ground that NUVELLE was deceptively similar to Upjohn's registered trade mark PROVELLE, also used for pharmaceutical preparations. The core of the dispute was whether the two marks, when used in relation to identical goods, were likely to cause deception or confusion among consumers.

The Registrar was required to determine whether the trade marks NUVELLE and PROVELLE were deceptively similar, having regard to the relevant legal principles and the evidence presented. This involved an analysis of the visual and phonetic similarities and differences between the marks, the common usage of prefixes and suffixes in trade marks within the pharmaceutical industry, and the likely perception of ordinary consumers, including the potential for imperfect recollection and confusion as to trade provenance. The Registrar also considered the applicant's obligation to demonstrate affirmatively that the mark was not calculated to deceive.

In reaching a decision, the Registrar applied the principles established in cases such as *An Application by the Pianotist Company Ltd.* and *TRIPCASTROID*. The Registrar found that while the prefixes "nu-" and "pro-" were common and potentially descriptive, the suffix "-velle" was a distinctive element with significant trade mark value, particularly in the pharmaceutical context. Despite the differences in the initial syllables, the Registrar concluded that the structural similarity of the marks, particularly the shared distinctive suffix, created a real risk of confusion regarding the trade origin of the goods. Furthermore, the Registrar considered the doctrine of imperfect recollection, finding that the similarity of the "-velle" ending was likely to lead to confusion, even if the initial syllables were clearly distinguished. The Registrar ultimately determined that the applicant had failed to demonstrate that the use of NUVELLE would not result in deception or confusion.

Consequently, the Registrar refused the application to register the trade mark NUVELLE. The Registrar also awarded costs to The Upjohn Company, as the successful opponent.